Last month the United States Court of Appeals for the Federal Circuit affirmed the lower court’s decision in Wyeth v. Kappos, Docket No. 2009-1120 (Fed. Cir. Jan. 7, 2010), which found that the United States Patent and Trademark Office (PTO) erred in its calculation of adjustments to the term in which patents are enforceable (“patent term adjustment” or “PTA”). This development has the potential to add hundreds of days, if not several years, to the term of some patents.
While each case must be examined on its specific facts, generally speaking, under the Wyeth decision, an issued patent may be entitled to additional PTA beyond that previously awarded by the PTO if the underlying application for patent took more than three years to issue and the application for patent was filed on or after May 29, 2000. If having additional patent term may be of value to you, please let us know so that we can review your patent portfolio accordingly. We note that under current PTO rules, there are strict time limits in place for requesting the correction of the PTO’s PTA determination. Applications for reconsideration of PTA must be filed (a) with the payment of the issue fee, (b) within two months of patent issuance (if requested by petition to the PTO), or (c) within 180 days of patent issuance (if appealing directly to court). However, given the PTO’s error in calculating PTA, there may be options available for requesting PTA for cases that fall outside of these time limits. The U.S.P.T.O. has outlined one such option in a notice on its website. This option became available the first week of February.
The notice outlines a procedure that will allow a Patentee to request, via a simple one page form, a recalculation of a patent’s PTA determination, as long as the form is submitted no more than 180 days after the grant of the patent. Where reconsideration of a PTA determination had previously been requested, a Patentee can also use the form to request an additional PTA recalculation (regardless of the 180 day limitation), as long as the form is filed within two months of the decision on the request. Thus, once these options become effective, it appears that requesting a PTA recalculation under Wyeth could be relatively inexpensive (only requiring a fraction of an hour of work and no U.S.P.T.O. fees). In light of the above, if you have issued patents that could gain meaningful value by having additional patent term, please let us know and we can discuss how best to proceed in reviewing your portfolio. In light of the strict time limits placed upon requests for making adjustments to PTA, please contact us at your earliest convenience. Delaying a request for a PTA may complicate or prevent the PTA application from being granted.
As a final point, we note that even if you do not wish to review any of the PTO’s decisions regarding the PTA of your patents or applications, you should keep this development in mind when reviewing your competitor’s patents or applications, as this development has the potential to add a significant amount of time to the term of some patents. For more information on how this development may affect you contact us at info@knobbe.com.